FAQ  •   Login  •   Register  •   Subscribe 

Welcome to the Forum for InventorSpot.com, the most popular invention related website in the world. Read our welcome message.

Skip to content

Moderators: Michelle, Scrupulous, citizen


Re: One Simple Idea, by Stephen Key

Postby StephenKey » Wed Mar 02, 2011 11:18 am

User avatar
StephenKey
Blue Belt
 
Posts: 364
Joined: Mon Oct 13, 2008 11:54 am
Finding an Attorney That Works For You

If you’re uncomfortable or uneasy filing protection for your ideas without assistance, hire a patent agent or patent attorney. However, all patent attorneys are not created equal - it’s important to invest time and energy into finding a firm or independent that you can effectively work with.

I like to relate finding a lawyer to finding a doctor. You’d rely on recommendations from friends and family, right? The best relationships are likely to be formed through referrals. If you know other inventors, ask them whom they are working with, or have worked with, and what area of expertise they special in. Most lawyers have specific fields and industries they are familiar with, or prefer to work in. The firm I’ve worked with for the past decade, Carr and Ferrell, are located in Silicon Valley. They specialize in High Tech Intellectual Property. Although my product, Spinformation, was pretty low-tech, I knew they had the resources and knowledge to advise and defend the product. Carr and Ferrell were recommended to me by Worlds of Wonder, a company I worked for briefly; the lead attorney at WOW knew John, my lawyer, personally.

If you don’t know any inventors you can gain recommendations from, there are, of course, other courses of action. The Internet is always at your disposal, as well as magazines such as Inventor’s Digest; advertisements for legal counsel are likely to be placed within the back pages. Additionally, you can use filed patents as resources. Use the USPTO to identify patents that use similar technology to your product or are in similar fields and find the lawyer that authored that patent. This is a great way to find an attorney, but make sure that the patents aren’t dated and too old for the information to be of use.

Patent agents are a great alternative option to working with a lawyer. Although they cannot litigate cases, they can file patents and obviously have extensive knowledge and expertise in doing so. Most patent agents work independently and should be less expensive than an attorney.

Remember that it’s unnecessary for your lawyer to live physically close to you. In the past twelve years, I’ve met with Carr and Ferrell face to face no more than a dozen times. Communication through email and telephone will suffice.

---------------
Reprinted with permission from www.allbusiness.com
Award Winning Inventor Stephen Key - http://www.inventright.com
Stephen's new book "One Simple Idea" from McGraw-Hill is available in stores nationwide as well as online.

Re: One Simple Idea, by Stephen Key

Postby Roger Brown » Wed Mar 02, 2011 11:57 am

User avatar
Roger Brown
Black Belt
 
Posts: 1175
Joined: Mon Oct 30, 2006 2:53 pm
Location: USA
NOT reprinted with permission from www.allbusiness.com :D


It all goes back to what I am constantly saying “Patentable does not equal marketable”. There is a large misconception by Inventors that if they receive a patent on their idea companies will be beating down their door and have suitcases full of money to give them. All a patent means is you patented something that was patentable. It does not mean you will receive any money. Another example I use is “You can patent edible sneakers, but would anyone buy them?”
Just like Inventors Patent Attorneys and Patent Agents have their strong areas and weak areas. Your patent is only as good as the person writing it. Ask what type of patents they do the most and are they familiar with your market. You don’t want a Patent Attorney that deals primarily in toys writing your patent for an industrial tool and hydraulics. Also, don’t be afraid to point out any issues with the patent you see. Just because they write patents for a living and you don’t does not mean they can’t miss something. You are paying them for a service. Make sure you get the best service you can because if you don’t ask questions you will be stuck with what you get and that mistake could cost you everything. Don’t assume they know everything and think you are being a pest asking questions.
I have licensed products in the toy, tool, kitchen, eyewear, and nuclear industries. I am expanding into the exercise, auto and garden industries. If you came to me with a fashion product it would be a new learning curve for me because ever field has its own set of quirks. Yes, there are certain rules that apply across the board, like being professional in your presentation, but you can’t take for granted what works in one industry works in another. This is where I always tell people the research comes in to play. You need to know your market before you jump in head first.
I would also like to point out a couple of missing pieces. One, just because it is patentable does not mean it is marketable. This is over looked by many Inventors as they get further in debt. Second, just because you have a patent does not mean it will cover the final manufactured product. A good example is my toy. It started out as “Toss and Score” I got it licensed using only a sell sheet. I had the signed license in hand. We started discussing the play factor of the toy and came up with other options to make it more action oriented. We added the catapult feature and removed the Velcro aspect. After two months of back and forth discussion the new toy “Power Pitch Horseshoes” was born. Look at my website and you can see the original sell sheet I sent them and the final product. It is easy to see the marked difference in play and function between the two. Had I spent the money for a patent on the first toy it would not have covered the second final product. I would have lost my money for the first patent and then have the issue of do I pay the maintenance fees to keep it active.
As most people know I approach companies with a sell sheet looking for a license. I have been successful multiple times and have two more licenses for products due out late 2011.
Once I get a yes it is up to the company to file and pay for the patent to protect their investment. This is why I have never spent over $100 on any product I have licensed. I have a low risk investment for 3% to 12% royalties of the company’s profits. The average royalty is 3% to 5%. I got the 12% due to it being a product in the nuclear industry.
Of the people that have spent money for patents look at how many of them have gotten to market versus those that have not. Another point is the company no matter how good you think your patent is are going to have their lawyers look it over for holes that might bite them as they move forward with your product.
You also have to look at how long have you had the patent prior to getting it licensed. I know Inventors that have had the patent 6 years of its life. So, the company knows that this is time they have lost on the patent life going into the agreement, which can affect your royalty percentage. You need to consider what life expectancy you think your product will hold in the market. If it is a fad idea paying for a patent may be a waste of time and money. The same goes for a niche product. You don’t want to spend $12,000 on a patent when the product is only bringing in $1,000 a year in royalties. It will take you 12 years to break even.
I want to make sure everyone understands I am not knocking patents. I want people to seriously look and see if patenting fits their needs. You also have to be willing and able to protect your patent in court if you feel someone is infringing on it.
If you do decide to go the patenting route, make sure you get a patent that protects your product. Don’t let them talk you into just a design patent because they know it is more likely to go through, when you really need a utility patent.
Come visit my sites at http://www.RogerBrown.net
or http://www.looking2license.com
I have gotten 9 products licensed spending less than $100 on each, you can too.

Re: One Simple Idea, by Stephen Key

Postby jackbnimble56 » Wed Mar 02, 2011 3:56 pm

User avatar
jackbnimble56
Brown Belt
 
Posts: 839
Joined: Thu Mar 26, 2009 11:28 am
Location: Massachusetts
I vote for this guy:

http://www.patentlawforinventors.com/

Because I've dealt with him before plus, he's one of our own! :wink:

Jack
Nimble Jack Enterprises - Innovative Solutions to Everyday Problems
To purchase the Magic Toob product visit: http://www.magictoob.com/

Re: One Simple Idea, by Stephen Key

Postby StephenKey » Wed Mar 02, 2011 5:25 pm

User avatar
StephenKey
Blue Belt
 
Posts: 364
Joined: Mon Oct 13, 2008 11:54 am
First To File Or First To Invent? – Pending Patent Legislation

Patent reform is a very important topic that will impact both Independent Inventors and companies. On Monday the Senate introduced the S.23 bill to the floor that would enact patent reform.

We wanted to let you know about this pending legislation and share some helpful information to help stimulate a discussion about the “First To File vs. First to Invent” issue which is part of the bill.

We encourage everyone from both sides of this issue to voice their opinion on the topic and also post links to any relevant articles on the topic.

Johnathan Charnitski, Managing Editor, BroadbandBreakfast.com talked about one of the changes that would take place if this bill passes in an article he wrote yesterday.

“One of the largest changes the bill would institute if it becomes law is switching the U.S. from a First-to-Invent system to a First-to-File system. In the former, only the original inventor of a device or process may rightfully file for patent protection. The First-to-File system, however, grants protection to the first inventor that brings a prosecutable claim to the US Patent and Trademark Office (USPTO). The change would being the U.S. into harmony with the great majority of global patent systems, which rely on First-to-File.”

Gene Quinn, President & Founder of IPWatchdog.com wrote the following about “First To File VS. First To Invent” issue on February 27th in his article titled
“Senate to Vote on Patent reform, First to File Fight Looms.“ Senators have been mentioning Gene’s articles during their debate on the floor.

“With respect to first to file, in practical effect we already have a first inventor to file system. For example, since the start of fiscal year 2005 on October 1, 2004, there have been over 2.9 million patent applications filed and only 502 Interferences decided. An Interference Proceeding occurs when multiple inventors file an application claiming the same invention, and is the hallmark of a first to invent system because it is possible in the United States to file a patent application second and then be awarded the patent if the second to file can demonstrate they were the first to invent. On top of the paltry 502 Interferences over nearly 7 years a grand total of 1 independent inventor managed to demonstrate they were the first to invent, and a grand total of 35 small entities were even involved in an Interference. A small entity can be an independent inventor, university, non-profit or a company with 500 or fewer employees. Thus, we have a de facto first to file system and the “first to invent” system that supposedly favors independent inventors is overwhelmingly dominated by large companies with over 500 employees.” If you click through to his article, he even has an interesting chart to illustrate his point.

Ok, what about a dictionary type definition from Wikipedia.
“First to file and first to invent are legal concepts that define who has the right to the grant of a patent for an invention. The first to file system is used in the majority of countries, with the notable exception of the United States, which operates a first to invent system.” For an educational and more detailed explanation, visit this link on Wikipedia.

The New York Times recently published an article titled. “U.S. sets 21st-Century Goal: Building a Better Patent Office.”
The article talks about how patents themselves have changed over time and the number of patents being filed is causing problems with being able to issue patents in timely manner. The article is not about “First to File vs. First To Invent”, however it is does help you understand that the patent office is having problems and helps you realize that changes of some kind need to be made at the patent office.

Louis Forman, the executive producer of the TV show, “Everyday Edisons,” and publisher of Inventors Digest wrote the following letter to The Honorable Patrick J. Leahy, Chairman and posted it on the Edison Nation Forum. Here’s a copy of the letter.
—————

February 14, 2011
The Honorable Patrick J. Leahy, Chairman
The Honorable Chuck Grassley, Ranking Member United States Senate Committee on the Judiciary

224 Dirksen Senate Office Building
Washington, DC 20510

Dear Chairman Leahy and Ranking Member Grassley:
First, please accept my congratulations on the overwhelming, bipartisan Judiciary Committee vote on compromise patent reform legislation. I strongly urge you to continue your efforts toward comprehensive reform by pushing for a vote on the Senate floor at the first available opportunity.

Your bill will make independent inventors, such as myself, more competitive in today’s global marketplace. America’s economic future rests on our ability to innovate new technologies that change the way people work, live and play. Yet, as you know, today’s patent system hinders this process, rather than cultivating entrepreneurship and the new ideas needed to create more jobs and foster economic growth.

As executive producer of the Emmy Award-winning series, “Everyday Edisons,” and publisher of Inventors Digest, a long-standing publication serving the independent-inventor community, I am continually in contact with individuals across the country dedicating their lives in search of the next big idea. Some of these efforts bear fruit, while others falter. However, what ensures the continuity of their efforts, are the legal protections afforded under U.S. patent law.

I started my first business as a sophomore in college and twenty years later, I can point to 8 successful start-ups, along with being an integral part of twenty additional ventures. As a result, I have registered ten U.S. patents and my firm has helped develop and file another 400 patents. These experiences have shaped my views on how the current system functions at a practical level for those attempting to translate their inventions into a profitable business endeavor. Let me begin by commending the USPTO for its tireless efforts to make the current system work in an efficient manner. Unfortunately, the USPTO is hampered by a system that is in dire need of reform.

From my perspective, the Judiciary Committee-passed bill helps independent inventors across the country by strengthening the current system for entrepreneurs and small businesses by including the following:

- Lower fees for micro-entities;
- Shorter times for patent prosecution creating a more predictable system;
- First-Inventor-to-File protections to harmonize U.S. law with our competitors abroad
while providing independent inventors with certainty;
- Stronger patent quality and reliability by incorporating “best practices” into patent
application examination and review, making it easier for independent inventors to attract
start-up capital; and
- Resources for the USPTO to reduce the current patent backlog of 700,000 patents.

Your efforts in the Committee represent a critical milestone for passage of comprehensive reform and highlight an opportunity for progress. I also hope that Committee action paves the way for vigorous bicameral discussions on enacting legislation in the near future.

We cannot afford to wait. The need for these types of common sense reforms dates back to 1966 when the President’s Commission to the Patent System issued thirty-five recommendations to improve the system. Some of these measures have been enacted over the years, but the economic challenges inherent in today’s global market necessitate a broader modernization of the patent system. The 2004 National Research Council of the National Academy of Sciences report echoed this sentiment pointing to how economic and legal changes were putting new strains on the system.

America’s economic strength has always rested on our ability to innovate. While a number of positive economic indicators provide hope for the future, the environment for small businesses remains mixed. Patent modernization is a tangible way to help America’s small entrepreneurs in a fledgling economy. Not only will these reforms help create new jobs and industries, but they will help ensure our economic leadership for years to come.

Please do not hesitate to contact me if I can be of any assistance in helping expedite passage of this critical legislation.

Sincerely,

Louis J. Foreman

Chief Executive Officer
Enventys
520 Elliot Street Charlotte, NC 28202

—————

Have our voice be heard and share what you think about the “First To File vs. First To Invent” issue. If you have some links to other relevant articles on the pending legislation or the “First To File vs. First To Invent” issue, feel free to post them.
Award Winning Inventor Stephen Key - http://www.inventright.com
Stephen's new book "One Simple Idea" from McGraw-Hill is available in stores nationwide as well as online.

Re: One Simple Idea, by Stephen Key

Postby Roger Brown » Wed Mar 02, 2011 6:40 pm

User avatar
Roger Brown
Black Belt
 
Posts: 1175
Joined: Mon Oct 30, 2006 2:53 pm
Location: USA
That is what I like about Louis Foreman. He is never sitting still. He is always looking for that next challenge. You would think he is busy enough as the executive producer of the TV show, “Everyday Edisons,” , running Enventys and publisher of Inventors Digest. He even has a book out called "The Independent Inventor's Handbook: The Best Advice from Idea to Payoff "
With so many people trying to take advantage of Inventors. You have to admire a person with that much energy out there trying to help Inventors.
Come visit my sites at http://www.RogerBrown.net
or http://www.looking2license.com
I have gotten 9 products licensed spending less than $100 on each, you can too.

Do You Really Need a Patent to Submit your Idea?

Postby Roger Brown » Wed Mar 02, 2011 7:10 pm

User avatar
Roger Brown
Black Belt
 
Posts: 1175
Joined: Mon Oct 30, 2006 2:53 pm
Location: USA
I have found one thing common among most Inventors. The majority are paying thousands for services they don't need if they want a company to license their product. The Invention Submission Companies all push get a patent search done, file a provisional patent application, file a full patent, do a market analysis report, have CAD drawings done. Why? Because you have to pay for these things and they provide a service doing just that.
Here are some things those sites neglected to tell you.

You can do a patent search yourself using the patent office website or google.com/patents, freepatentsonline.com The bad thing is if you don't find anything listed it doesn't mean a provisional patent hasn't been filed on it. You just can't see it. You can spend all of your money on a patent only to find out someone else has a lock on your spot. Also, you will find out that when you license your idea to a company they may want to improve on your idea or modify it in a way that your patent no longer covers the final product. So another patent has to be filed. I call this "What started out a Dog ends up a Cat syndrome" Your original patent money was wasted. I have 7 items on the market and didn't spend a dime on the patents. The companies licensing the ideas paid for the patents out of their pockets to protect their investment. The patent covers the actual product they are producing.

A provisional patent application is cheaper, but starts a 1 year clock. If you don't get it licensed in that year you need to apply for a full patent or your idea is open to anyone else that will file a patent. Once you start the full patent you are going to spend thousands to get it completed. Do you have the resources to pay for a full patent? You are also going to wait at least a year or more before the patent is issued.

Patents are great if you are a large company and can spend hundreds of thousands of dollars to defend your patent. The average person can not afford to go up against a Disney or Mattel sized company to fight off knockoffs. You will lose any profit you made and be in court for years. If you don't think that is true look at all the knockoffs of patented items on the shelf right now.

A market analysis is a waste of your money unless you are planning to produce and sell the item yourself. If you do one today and you find a company to license your idea they will do their own market analysis and not take your word for it on yours. So, you are paying for something they will do anyway. In the past 8 years I have had only 1 company ask me if I had done a market analysis on that product idea. I asked if they needed me to do one. He said no, they would do their own.
Plus, how long is your market analysis good for? If it has been a year since you had one done and you still haven't found a company to produce your product is your market analysis still valid? Can you afford to have one done every 6 months or yearly?

You don't always need CAD drawings or some other technical engineering drawing to get a point across. If you are doing electronic circuitry or something extremely high tech it would probably be advisable. If you are producing a low tech item or board game you don't have to be as technical. All of my drawings are two dimensional. They look professional, get the point across, are in color and have concise explanations included describing the items function and benefits.

More and more companies are open to looking at outside ideas from Inventors. They see the value of having someone outside the company look at their line and see if they can come up with something that fits. I approach companies using a nondisclosure agreement. Once we each sign the agreement I will submit my idea for review. If they are interested we will discuss royalty terms and licensing.

Since I am not having to wait on a patent I can immediately start approaching companies. This saves me a year or more in waiting to get started. Another point that you may consider is that if you approach a company with your patented idea they will normally offer between 3% and 5% royalty based on the sales. If you approach them with the same idea and it is not patented they will offer you 3% to 5% royalty. So, you are saving the cost of the patent and when you get your first royalty check it is profit, not something you are using to make back the money you spent on the patent.
Come visit my sites at http://www.RogerBrown.net
or http://www.looking2license.com
I have gotten 9 products licensed spending less than $100 on each, you can too.

Re: One Simple Idea, by Stephen Key

Postby jackbnimble56 » Thu Mar 03, 2011 4:51 am

User avatar
jackbnimble56
Brown Belt
 
Posts: 839
Joined: Thu Mar 26, 2009 11:28 am
Location: Massachusetts
Roger

As usual, your comments are spot on! What would we do without guys like you!

Jack
Nimble Jack Enterprises - Innovative Solutions to Everyday Problems
To purchase the Magic Toob product visit: http://www.magictoob.com/

Re: One Simple Idea, by Stephen Key

Postby StephenKey » Thu Mar 03, 2011 9:14 am

User avatar
StephenKey
Blue Belt
 
Posts: 364
Joined: Mon Oct 13, 2008 11:54 am
7 tips to being a successful entrepreneur

I don’t care what industry you want to jump into: first, conduct a Google search about the industry. Learn as much as you can about it. Who are the major players? How does the industry operate? What are people blogging about? Everything is there, and it’s free. Make use of the Internet.
Contact the industry’s trade association. They all have one. Call the organization and ask them to send you more information about the industry, such as sales figures broken down into specific categories. Sometimes you may have to become a member to access the most complete information, but don’t underestimate some sweet-talking. You may be able to get your hands on a full report.
Start reading your industry’s trade magazines. Contact a salesman for the magazine, and ask him or her to send you a press kit. I love media kits because they break down a large wealth of information in a digestible way. What and who is hot right now? The salesman will know. Try to befriend him: he will know what’s going on!
Attend a tradeshow. Don’t bother purchasing booth space. Simply attending a trade show is the easiest and fastest way to become an industry expert. Wear excellent walking shoes, hand out as many business cards and shake as many hands as possible, and listen to all of the lectures. This is a great opportunity for networking.
Create a business plan. Unsure about what your business plan actually is? Putting pen to paper will help identify the holes in your plan and the missing information you need to find. Start with just one page, if you’re feeling daunted. Keep lengthening and adding more detail to your plan. There are great books on business plans, as well as information on the Internet.
Find a mentor. Identify someone in your industry who has done or is doing what you hope to accomplish and make friends. How can you go about doing so? Simply by asking for help. I recommend seeking out an older retired individual; more often than not, he or she will have more time to devote to you and will be excited to give back.
And finally, consider working in the field – for someone else! Most entrepreneurs hate to hear this piece of advice, but I feel like there are few better ways to learn the ins and outs of an industry. Get your feet wet! Even working for someone else for six months will give you such better perspective on the field.

----------
Reposted with permission from www.allbusiness.com
Award Winning Inventor Stephen Key - http://www.inventright.com
Stephen's new book "One Simple Idea" from McGraw-Hill is available in stores nationwide as well as online.

Re: One Simple Idea, by Stephen Key

Postby StephenKey » Thu Mar 03, 2011 9:16 am

User avatar
StephenKey
Blue Belt
 
Posts: 364
Joined: Mon Oct 13, 2008 11:54 am
The Power of Provisional Patent Applications – With Patent Attorney Michael Neustel – Free Webinar

Provisional Patent Applications are an amazing tool allowing the Independent Inventor to get patent pending status and sell their idea with very little risk. Michael will cover the advantages, disadvantages and techniques for using provisional patent applications to protect your ideas without breaking the bank.

Presented By:
inventRight.com Co-founders Stephen Key and Andrew Krauss will be joined by their guest Patent Attorney Michael Neustel for this FREE webinar on “The Power Of Provisional Patents”.

Image
About – Michael S. Neustel – U.S. Registered Patent Attorney
Michael is the founder of Neustel law Offices, LTD and the National Inventor Fraud Center, Inc. He focuses his patent law practice on patent searches, patent application preparation and prosecution and patent infringement due diligence. Michael counsels inventors and small-businesses on how best to protect their inventions and trademarks.

ImageImage
About – Stephen Key And Andrew Krauss
Over the past 10 years Stephen and Andrew have coached and mentored countless inventors and entrepreneurs to become successful by licensing their ideas.

———————————-
Cost:None
Date: Thursday, March 17th
Time:
5pm Pacific time
6pm Mountain Time
7pm Central Time
8pm Eastern Time

Click here for more information and to register
http://inventornotes.com/2011/03/02/the-power-of-provisional-patents-with-patent-attorney-michael-neustel-free-webinar/
Last edited by StephenKey on Thu Mar 03, 2011 1:47 pm, edited 1 time in total.
Award Winning Inventor Stephen Key - http://www.inventright.com
Stephen's new book "One Simple Idea" from McGraw-Hill is available in stores nationwide as well as online.

There is no such thing as a Provisional Patent

Postby Roger Brown » Thu Mar 03, 2011 12:05 pm

User avatar
Roger Brown
Black Belt
 
Posts: 1175
Joined: Mon Oct 30, 2006 2:53 pm
Location: USA
Stephen you may want to change the title of your webinar “The Power Of Provisional Patents”. To say “The Power of Provisional Patent Applications”. Because there is no such thing as a Provisional Patent.

Just for clarification, a provisional application for patent is a legal document filed in the United States Patent and Trademark Office (USPTO), that establishes an early filing date, but which does not mature into an issued patent unless the applicant files a regular patent application within one year. There is no such thing as a "provisional patent".

The patent office lists it as a Provisional Application for Patent http://www.uspto.gov/patents/resources/ ... rovapp.jsp Although everyone likes to call it a Provisional Patent Application (PPA).

Even the experts on your new website understand the difference.

Don Kelly- Patent Agent, as a Certified Licensing Professional. http://www.patentagentplus.com
Stated on Edisonnation.com “ In your provisional patent application* (*Note, there’s no such thing as a provisional patent.)”
http://www.edisonnation.com/posts?q=+no ... mit=Search

Your good buddy Troy Robison (Goes by Gizmo on some internet forums) also on your new website listed as a Patent Search Expert, made similar statements “ there is no such thing as a Provisional Design Patent Application, Designs can’t be covered in a PPA……..”

I think Joseph Page- Patent Agent said it best when he said:
There is no such thing as a provisional patent. One of the great problems with this whole ‘provisional’ thing is people start to mistakenly believe there is a patent.


Glad to see you have some Experts on your website to help keep things straight. We wouldn’t want you helping to keep that misinformation alive.
Come visit my sites at http://www.RogerBrown.net
or http://www.looking2license.com
I have gotten 9 products licensed spending less than $100 on each, you can too.
PreviousNext